Canada: What You Need To Know About Geographical Indications In Canada

A geographical indication (GI) is a type of intellectual
property defined in the Trade-marks Act. GI refers to a
name, sign or other indication used to identify a wine, spirit,
agricultural product or food as originating in a country,
territory, region, or locality that is of a quality, reputation or
other characteristic attributable to that geographical origin.

From a consumer's perspective, GIs function to indicate to
the consumer that the products are made from a particular region or
that the products contain characteristics unique to those
manufactured from a particular region. Many GIs have important
economic and cultural value to the territories they represent. By
way of example, Napa Valley, Okanagan Valley, Champagne, Port, and
Asiago are protected GIs in Canada.

What can be protected using GIs in Canada?

In the past, Canadian law only attributed GI protection to wines
and spirits. However, as of September 21, 2017 and as a result of
the EU-Canada Comprehensive Economic Trade Agreement
(CETA), Canadian law now offers protection for 24 more
categories of agricultural products and food:

What Does GI Protection Mean?

Like other forms of intellectual property, such as trademarks
and copyright, GI protection offers the owner with certain rights.
A GI provides the right to prevent another person or business from
"using" the GI in Canada on products that do not
originate from the relevant territory referenced by the GI.
"Use" of a GI includes activities such as sale and
advertising of the goods in Canada, importation of goods into
Canada, and exportation of goods from Canada to other countries.
This right, however, is limited to products and goods classified
under the same category. There are also a number of exceptions
which may allow another party to use a GI. Some of the exceptions
are listed below:

The GI owner provided consent.

The GI is a person's name or the name of a predecessor in
title.

The GI is used in comparative advertising.

The GI is no longer protected by the law of the territory or
has fallen into disuse.

The GI is a term customary in common language in Canada.

Please note that not all the possible exceptions have been
listed in this article. Several other exceptions for specific GIs
or categories of goods also exist. If you have any doubts, it is
best to consult with a lawyer or a trademark professional to assess
the specific circumstances.

Given that there are all these exceptions, it can be challenging
to fully canvass how GIs are protected in Canada. Figure 1 sets out
a number of hypothetical examples:

Figure 1:

Protected GI

Use by Second
Party

Is Use by Second Party
allowed?

"ABC" for cheese from
Spain

Use of "ABC" on cheese
packaging; product is made in Canada

No

"CDE" for olive oil from
Italy

Use of "CDE" on dry-cured
meat; product is made in Canada

Yes
(different product categories)

"XYZ" for dry-cure meat from
France

Use of "XYZ" for dry-cured
meat; product is made in Canada; owner's name is "Jason
XYZ"

Use of "Petite Cantal like
cheese" for cheese; product is made is Canada

No
(addition of "like" is insufficient. This exception only
applies to certain cheeses but not Petite Canal.)

"Parmigiano Reggiano" for
cheese from Italy

Use of "Parmesan" for cheese;
product is from Canada

Yes
(Use of "parmesan" is permitted based on an
exception)

The protection afforded by GIs becomes more complex when
considering translations of otherwise protected GIs. Use of the
translation of a GI for wines, spirits or GI's protected
through CETA would continue to be protected. However, use of
translations of GIs protected through applications in Canada would
only be protected if the translation is also listed as a protected
GI. We recommend discussing with a professional for this type of
inquiries.

How can you Obtain and Enforce GI Protection in Canada?

In order to apply for GI protection in Canada, a responsible
party must submit a request to have the GI listed. This
"responsible party" is an entity (person or business)
that is by reason of state or commercial interest, sufficiently
connected with and knowledgeable of the category of the product.
Each request must be accompanied by a fee of $450. CIPO offers a detailed guide on how to apply for GIs.
Assuming all requirements are met at filing, based on data in 2018,
it will take approximately five to eight months to enter a new GI
on the list of protected GIs in Canada.

Once a GI enters the list, it is then possible to enforce the
protected GI from third-party use through a number of avenues
discussed below. A Canadian lawyer or a trademark agent should be
consulted for assistance in obtaining and enforcing GI
protection.

1. Under the Trade-marks Act through the CBSA Request
for Assistance Program

Under the Request for Assistance Program (RFA), intellectual
property rights holders can file a written request to temporarily
detain suspected counterfeit and pirated goods entered at the
border. These applications remain valid for two years (can renew
every two years at the applicant's request). As a result of
CETA, GI right holders are able to make use of this program to
enforce protection of their GIs. Information on how to apply for
the RFA Program can be found on the CBSA's website.

2. Through Court Proceedings

In order to enforce the GI, an owner may initiate a court
proceeding in Canada against a third party's unauthorized use.
Litigation however is expensive and complex and a GI owner should
consider legal counsel before embarking on this method of GI
protection.

3. Under the Food and Drugs Act

The Food and Drugs Act contains provisions prohibiting
misleading labelling. A GI owner may enforce a GI by filing a
complaint with the Canadian Food Inspection Agency (CFIA). The CFIA
enforces the food safety and labelling rules outlined in the
Food and Drugs Act. In order to file a complaint, a GI
owner may use an online form provided by CFIA to report a food
safety or labelling concern. The CFIA may then conduct an
investigation and take administrative action.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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